"Improvement of Patent and Design 'Appeal Trial' Procedures... Shortening the Rights Securing Period"

When a decision to uphold is made in an appeal against a refusal decision for patents or designs, the trial examiner will be able to immediately make a registration decision. This is expected to shorten the unnecessary processing time involved in undergoing another examination by the Korean Intellectual Property Office (KIPO) after the decision to uphold, thereby enabling the rapid securing of patent and design rights.

The Patent Trial and Appeal Board (PTAB) of KIPO announced on the 31st that starting from January next year, in appeals against refusal decisions for patent and design registrations, if the registration decision is deemed appropriate and there are no additional issues, the trial examiner will be allowed to make a registration decision by trial ruling.

Provided by the Korean Intellectual Property Office

To prevent registration delays, the related procedures have been improved so that cases are only remanded to the examiner when there are unresolved issues not reviewed during the examination stage or when new grounds for refusal are found, requiring additional examination.

Through this, it is expected that in the future, cases upheld in appeals against refusal decisions will allow the trial examiner to directly make a registration decision by trial ruling, enabling applicants to register patents or designs 1 to 2 months faster.

Previously, if the appeal against the refusal decision was found to have merit during the trial, the refusal decision was canceled and the case was sent back to the examination division of KIPO (cancellation remand) for re-examination by the examiner. In this process, the applicant’s patent or design registration was inevitably delayed until the examination division made the registration decision.

The problem was that the cancellation remand imposed a psychological burden on the examiner receiving the trial ruling, and cases of cancellation remand through appeals against refusal decisions have been steadily occurring.

Moreover, even in cases upheld by the PTAB in appeals against refusal decisions, the existing procedure requiring re-evaluation by the examiner inevitably delayed the applicant’s patent or design registration decision. This was the background for enabling registration decisions through trial rulings by the trial examiner.

Seo Eul-su, head of the Patent Trial and Appeal Board, said, “We hope this procedural improvement will help secure patent and design rights early,” and added, “The PTAB will continue to identify and resolve unreasonable points from the customer’s perspective.”

This content was produced with the assistance of AI translation services.